Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Response to Amendment
Status of the Claims
Receipt of Applicant’s response, filed 23 Jun 2026 has been entered.
Claims 8-27 remain pending in the application.
Claims 14-21 are amended.
Claims 1-7 are cancelled.
Claims 8-13 and 22-27 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claims 14-21 are under consideration.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 14 Apr 2026 are in compliance with the provisions of 37 CFR 1.97, except where noted. Accordingly, the information disclosure statement is being considered by the examiner. NPL documents 2 and 3 were not considered as copies were not provided.
Objections Withdrawn
Objections to the Claims
The claim objections set forth in the Non-Final Office Action mailed 23 Mar 2026 are hereby withdrawn in light of applicant’s amendments of the claims.
Rejections Withdrawn
Rejections Pursuant to 35 USC § 112
The rejections pursuant to 35 U.S.C. 112(b) set forth in the Non-Final Office Action mailed 23 Mar 2026 are hereby partially withdrawn in light of applicants amendment of the claims.
Rejections Pursuant to 35 USC § 103
The rejection of under 35 U.S.C. 103 as being unpatentable over Xing et al. (US 2017/0348220, 07 Dec 2017, listed on IDS filed 02 Jul 2025) is withdrawn in light of applicant’s amendment of the claims, and in favor of the new grounds of rejection set forth below. The examiner notes that the claims have been amended to remove the “paste like” limitation, to remove the requirement that the composition must “contain” some amount of the cyclosilioxane comoponents and to now require 2,000 ppm or less of the cyclo-siloxane components before hydrosilylation.
Rejections Maintained
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 18-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 18-21 are unclear in the recitation that the hydrosilylation reaction is carried out in the presence of “0.01 to 100 mass% of component (B) blended in the paste-like silicone composition.” If component (B) is at 100 mass% this would seem to exclude other components such as component (A). Thus, it is unclear what the percentage of (B) is intended to refer to in relation the overall paste-like silicone composition.
Response to Arguments
Applicant's arguments filed 23 Jun 2026 have been fully considered but they are not persuasive. Applicant states that the limitation “0.01 to 100 mass%” is defined as the amount of “component (B) blended” in the paste-like silicone composition for “hydrosilylation reaction,” and does not apply to the paste-like silicone composition as a whole. Applicant points to [0051] of the specification.
The examiner does not find this persuasive as the language is not clear as to what is intended to be required with the limitation. It is not clear what distinction the applicant is making by noting the percentage is to the amount blended in the composition for hydrosilylation reaction and not to the composition as a whole. The point of the rejection remains as it is not clear what 100 mass% would refer to in this context.
New Grounds of Rejections
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 14-21 are rejected under 35 U.S.C. 103 as being unpatentable over Wakita et al. (WO 2019/189394 A1, published 03 Oct 2019, references to teaching in the art are made to US2021/0113452 which is used as the translation).
Wakita teaches a cosmetic composition which includes silicone elastomer particles ([0012]). Wakita teaches a method for manufacturing an oil-including silicone elastomer particle through the steps I and II where step I includes emulsifying, in water, a mixture including a cross-linkable silicone composition (A) including a) an organopolysiloxane having at least two alkenyl groups, with a carbon number between 4 and 20, per molecule; b) an organohydrodiene polysiloxane having at least two silicon atom-bound hydrogen atoms per molecule; and c) a hydrosilyation reaction catalyst; and an oil (B) that is liquid at 40°C and step II includes producing an oil-including silicone elastomer particle through curing, in the presence of the (c) hydrosilylation reaction catalyst, the cross-linkable silicone emulsion particle produced in step (I) ([0040-0050], [0066-0070]). This teaching renders obvious the (A-1), (A-2), and catalyst components of claim 14.
Wakita teaches
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221
355
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297
345
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And specific formulas of
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67
347
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(where ME is methyl and HE is hexenyl ([0168]) and
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53
340
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Which render obvious the formulas of claims 15-17.
Wakita teaches that the oil may be isododecane ([0106]), which is an oil in a liquid state at 25°C as evidenced by the instant specification ([0059]), rendering obvious component (B) as claimed. Wakita teaches examples where a component (B) oil was added at 33% ([0185]), rendering obvious claims 18-21.
Wakita does not expressly teach selecting the polyorganosiloxane compounds for a hydrosilylation reaction with a catalyst and oil with sufficient specificity to rise to the level of anticipation.
However, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have formed a composition with silicone particles formed with siloxane compounds, catalyst, oil (e.g. isododecane) and a hydrosilylation reaction that render obvious the method of producing a silicon composition as claimed. Each of these components and method steps are known form Wakita as suitable as part of forming cosmetic compositions thus providing a reasonable expectation of success and rendering it obvious to one of ordinary skill to use these components in such a method. Regarding the limitation of claim 14 that the octamethylcyclotetrasiloxane, decamethylcyclopentasiloxane, and dodecamethylcyclohexasiloxane are 2,000 ppm or less in components (A-1) and (A-2) and in the silicone composition, the examiner notes that Wakita does not require these components as part of the composition, thus rendering it obvious to exclude them from the individual ingredients and the composition as a whole as they are not a necessary components.
Accordingly, the instant claims are rendered prima facie obvious over the teachings of Wakita.
Response to Arguments
Applicant's arguments filed 23 Jun 2026 have been fully considered but they are not persuasive. The arguments related to the prior applied art, Xing, are now moot as the previous rejection has been withdrawn. The applicant further argues for unexpected results, pointing to Table 1 and noting that when the molecular siloxane is below 100 ppm the odor and plasticization return are both absent, whereas the opposite is true when the molecular siloxane is above 100 ppm (pages 11-12 of remarks). This is not persuasive as the results are not commensurate in scope with the claims. For example, the claims merely require that the particular siloxane compounds are less than 2,000 ppm which actually encompasses the range (i.e. above 100 ppm) that is said in the remarks to include the odor and plasticization effect. The applicant has not shown the significance of the limit 2,000 ppm. The examiner further notes that it is not immediately clear that the data establishes the unexpected nature of the limit of 100 ppm as there is no discussion or results indicating what happens directly above this limit.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN C MITCHELL whose telephone number is (571)272-7007. The examiner can normally be reached Mon-Fri 8:00-5:00.
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/E.C.M./Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
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